Judge R. Gary Klausner of the Central District of California issued an order granting summary judgment of no infringement in favor of Finnegan client FedEx in a Multi-District Litigation (MDL) patent case involving the interactive voice communications patent portfolio of Ronald A. Katz Technology Licensing L.P. The patent portfolio involves more than 50 patents, including thousands of claims. At one point there were more than 50 defendants in the MDL, making this MDL one of the largest patent cases in history. Earlier in the MDL, Judge Klausner issued orders invalidating other claims Katz asserted against FedEx, making FedEx one of the first to have "all of the claims in this case ... resolved against Katz."

After purchasing the assets of a bank that was being dissolved by the FDIC, our client commenced the process of re-branding the bank as ONEWEST BANK. Between the time that the new brand had been chosen, announced, and launched, former employees of the dissolved bank learned of the new brand and announced plans to launch their own mortgage brokerage company named ONEWEST MORTGAGE. To protect the client's new mark and to prevent the former employees from falsely claiming a relationship with the new bank, we filed suit and prepared to file a motion for a temporary restraining order. In response to our quick and forceful action, the defendants agreed to change their name and consented to an entry of a permanent injunction. The case has since settled in favorable terms for our client.

Nuance filed a complaint against Shanghai Hanxiang (CooTek) Information Technology Co., Ltd. in the ITC, accusing CooTek of infringing five patents generally related to software keyboard for mobile devices. CooTek took a targeted approach, which resulted in Nuance dropping one patent after receiving CooTek's prior art and obtaining an early finding of noninfringement for certain designs on three other patents. As the parties approached trial, the dispute focused on the fifth patent, which had the shortest remaining life. CooTek's streamlined approach proved to be both effective and efficient. Finnegan helped negotiate a favorable settlement, which protected CooTek’s U.S. market and further saved CooTek the expense of a trial.

Finnegan represented Roshen, a major Ukrainian candy maker, in two actions initiated by Ferrero Rocher before the Trademark Trial and Appeal Board. Ferrero claimed that the ROSHEN logos were likely to infringe and dilute its ROCHER and FERRERO ROCHER marks. Roshen counterclaimed to cancel Ferrero’s registration for the mark ROCHER on the grounds of fraud and abandonment. Finnegan worked closely with experts to design and conduct two nationwide consumer surveys: one on the likelihood of confusion and the other testing actual association of the ROSHEN logo with FERRERO ROCHER/ROCHER for dilution. The survey results showed a less than three percent chance of potential confusion or association. In the middle of the TTAB proceedings, Ferrero filed a federal lawsuit against Roshen in a U.S. district court, asserting trademark infringement and unfair competition, but then withdrew the complaint. At the end of the discovery period, Ferrero withdrew both its TTAB opposition and cancellation proceedings against Roshen with prejudice, resulting in a complete victory for Roshen.

Finnegan represented former Olympic silver medalist Matt Lindland and his Team Quest mixed martial arts (MMA) gyms in defense a claim of trademark infringement asserted by a former colleague and well-known UFC fighter, Dan Henderson, on the basis of Lindland’s use of the name Team Quest for MMA facilities and merchandise. Because of Henderson’s knowledge of Lindland’s long standing use of the name, the court held that any relief sought by Henderson with respect to Lindland’s use of the Team Quest name was barred by laches. In particular, the court rejected Henderson’s assertion of inevitable confusion even though both parties showcase fighters in internationally syndicated events and provide online sales of branded merchandise. On appeal, the 9th Circuit affirmed the lower court’s decision. Henderson filed a petition for rehearing en banc, which was been denied.

Finnegan successfully represented client Syneron Medical Ltd. against Viora Ltd. and Viora Inc. in a patent infringement action in the E.D. Texas. A year after the suit was initiated and just a few months away from a trial, Viora acknowledged the validity of Syneron’s patent and agreed that for the next 12 years, it will pay Syneron royalties of 7.5% to 15%, depending on the number of U.S. sales of Viora systems that apply vacuum together with radio frequency energy for body contouring, cellulite reduction, skin tightening, and circumferential reduction.

When an organization that certifies medical personnel discovered that its secure certification exam had been compromised, Finnegan acted quickly to minimize the harm by obtaining an expedited certificate of registration from the U.S. Copyright Office and negotiating a favorable settlement for the client, including reimbursement of the organization’s attorneys’ fees and costs of dealing with the compromised exam.

Finnegan represented GlaxoSmithKline (“GSK”) in various patent infringement litigations protecting GSK’s Paxil® antidepressant drug against many generic drug manufacturers that filed ANDA suits seeking to sell generic versions of the drug. Finnegan worked with GSK’s antitrust counsel to settle multiple litigations and minimize their antitrust risk. After one of those settlements, the generic drug manufacturer’s API supplier brought an antitrust suit challenging the settlement. Finnegan worked with GSK’s antitrust counsel to successfully defeat the antitrust claim in a motion to dismiss strongly upholding the right of patent owners to settle ANDA litigations. Finnegan also worked with GSK’s antitrust counsel in defending related class action antitrust suits brought by other litigants based on patent infringement litigations.

Finnegan client AOL reached a record-setting agreement with Microsoft to receive $1.056 billion for selling over 800 patents and granting Microsoft a license on its remaining 300 patents and patent applications. We worked closely with AOL over several years to strategically build and strengthen its patent portfolio, towards its monetization goals. Our strategic patent planning and prosecution services involved reviewing and processing hundreds of transferred cases. The team analyzed the portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office examiners to obtain prompt allowances. We also helped AOL identify monetization opportunities and develop offensive and defensive patent strategies. When AOL’s board of directors authorized a sale process for the portfolio, we worked with AOL’s in-house patent team and top executives and a team of advisors, handling numerous critical tasks and providing guidance throughout the negotiations and bidding process.

Finnegan represented BTG in defending its granted European patent in an appeal by Kreussler against the decision of the EPO to reject its opposition. The patent relates to BTG’s Varithena sclerotherapy foam product for treatment of varicose veins that has recently received regulatory approval in the U.S. During the opposition, we argued that the experimental evidence produced by Kreussler was deliberately misleading. We presented our own evidence showing why the experiments performed by Kreussler failed and how merely following the explicit teaching of the patent would avoid such failure. At appeal, Kreussler was limited to a single prior art document and only a subset of the granted claims was considered to be challenged. At the appeal hearing in surprisingly quick fashion, the EPO denied Kreussler’s grounds of appeal and maintained the patent in its granted form.